WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Technogym S.p.A. v. Privacy Service Provided by Withheld for Privacy ehf / Youcef Bahr, Zina
Case No. D2021-4043
1. The Parties
The Complainant is Technogym S.p.A., Italy, represented by Iusgate, Italy.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Youcef Bahr, Zina, Algeria.
2. The Domain Name and Registrar
The disputed domain name <mywellness.best> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2021. On December 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming the disputed domain name is registered with it;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint; and
(c) confirming that English is the language of the registration agreement.
The Center sent an email communication to the Complainant on December 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 17, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2022.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 31, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is an Italian joint-stock company founded in 1983. It provides products, services and digital solutions in the fields of fitness and wellness. According to the Complaint, it has some 2,200 employees working from 14 branches in Europe, the United States of America (“United States”), Asia, the Middle East, Australia, and South America.
In 2021, it was the official supplier of fitness equipment to the Tokyo 2020 Olympic Games. It has been the official supplier to the summer and winter Olympics since Sydney 2000.
Amongst other things, the Complainant provides fitness and wellness tracking services under the name “MyWellness” from a website at <mywellness.com>, a domain name which has been registered since 1998. According to the Complainant, the services offered through the website include information about how to manage and improve lifestyle. The Complainant also provides these services through “My Wellness” applications downloadable from the Apple App Store and the Google Play store.
The Complaint includes evidence that the Complainant is the owner of registered trademarks for MY WELLNESS:
- European Union Trademark Registration No. 001557636, MY WELLNESS, registered on March 30, 2001 for goods/services in international classes 9, 16, 35, 38, 41, and 42;
- United States Registration No. 2,606,995, MY WELLNESS, registered in the Principal Register on August 13, 2002 for goods/services “relating to activities for personal fitness and physical well-being” in international class 42;
- Brazilian Registration No. 823528618, MY WELLNESS registered on June 5, 2007 for software and other goods in international class 9.
So far as the record in this proceeding reveals, the Respondent registered the disputed domain name on October 12, 2021.
Shortly before the Complaint was filed, the disputed domain name resolved to a website which (from the “About Us” page) presented as a “Professional Blogging Platform” directed to “dependability and health advice”. At the time this decision is being prepared, the website appears to have been suspended or taken down.
From the materials included in the Complaint, the landing page was in Italian, headed “Benessere” with the strapline “La mia sulute ê la mia ricchezza”. There were a number of posts or articles also appearing to be in Italian.
Although the articles were in Italian, the “About Us” page was in English.
In addition, the comment box at the end of each article was in English: “Leave a Comment. Your email address will not be published. Required fields are marked *” then followed by a box into which the comment could be posted and provision made (in English) for entering Name, Email and Website details.
According to the Complainant, when a comment was submitted, nothing happened for a while and then the comment simply disappeared.
The Complainant’s representatives sent a cease and desist letter to the Respondent on October 28, 2021. That letter received no response.
5. Discussion and Findings
No response has been filed. The Complaint and the Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MY WELLNESS identified in section 4.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.best” TLD, the disputed domain name consists of the Complainant’s registered trademark without the space separating the words “my” and “wellness”. This is an immaterial difference as spaces cannot be included per se in a domain name. The disputed domain name, therefore, is identical to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name long after the Complainant had registered its trademark and also well after the Complainant began using its trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
At least before the Complaint was filed, the Respondent purported to be using the disputed domain name in connection with a professional blog relating to health and well-being.
The Complainant contends that there were numerous grammatical errors and other inaccuracies or misleading claims in the Italian content of the website. According to the Complainant, the grammatical errors were consistent with the Italian language content being generated by a computerised translation service. Also, as noted above, some of the materials on the website are in English rather than Italian. The Complainant also points out that the individual posts do not have an authorial attribution or date of posting as is common with such materials.
It is unnecessary for the Panel to form a view about these issues for the purposes of this requirement under the Policy. What appears to have been the substantive content on the website – the blog posts – was in Italian or directed to an Italian-speaking audience. Italian is not one of the official languages of Algeria where the Respondent is located. Taking the posts as face value, therefore, it appears that the website was directed to an Italian audience.
Assuming in the Respondent’s favour for present purposes that the website was a genuine blogging exercise, the use of the disputed domain name in connection with the website appears to conflict with the Complainant’s trademark, particularly the European Union trademark which, of course, extends to Italy. The use of the disputed domain name in connection with an offer of goods or services – or information in the case of a blog, in conflict with the Complainant’s trademark, therefore, does not qualify as use of the disputed domain name in connection with a good faith offering of goods or services under the Policy, at least in the absence of some defence or justification.
Nor does it qualify as a legitimate noncommercial or fair use given the risks of implied affiliation arising from the identity of the disputed domain name to the Complainant’s trademark and the close relationship of the content of the website to the Complainant’s products and services. See e.g., WIPO Overview 3.0, section 2.5.1.
The Respondent has not sought to offer any defence or justification for his use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that prima facie case or advance any claimed entitlement. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Bearing in mind how long the Complainant has held its rights in the MY WELLNESS trademark and its prominence as an official supplier of products and services to the Olympics, it appears reasonable to accept the Complainant’s contention that the Respondent was well aware of the Complainant’s rights when the Respondent registered the disputed domain name. That is particularly so where the website to which the disputed domain name resolved appears to have been targeted at an Italian audience, which is the home base of the Complainant and with which the Respondent has no obvious connection.
The Respondent has not seen fit to deny the Complainant’s allegations of knowledge.
In these circumstances, the registration and use of the disputed domain name for a website which conflicts with the Complainant’s trademark rights constitutes registration and use in bad faith under the Policy. Those conclusions would be even stronger if, as the Complainant contends, the website to which the disputed domain name resolved was really being used in connection with some sort of email and private data harvesting exercise.
Accordingly, the Complainant has established all three requirements under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <mywellness.best>, be transferred to the Complainant.
Warwick A. Rothnie
Date: February 14, 2022